Patents protect inventions. Patents are issued by the government of each country and grant to the owner the right to prevent anyone else from making, using or selling the invention covered by the patent in that country.

An invention is any new and useful machine, device, apparatus, system, method, process or composition of matter. Because of the requirement that the invention be “new”, it is important that inventor not tell people about the invention prior to filing for patent protection so as to not render the invention no longer “new” and therefore unpatentable.

Patentable Subject Matter

In order to be eligible for patent protection, you must show that your development fits within a recognized category of patentable subject matter. In Canada, your development must either be an art, process, machine, manufacture or composition of matter.

Arts and processes are steps or methods which act on objects to achieve a result. Machines are a grouping of components which act together. A manufacture is something made by man or a machine and a compositions of matter includes chemical compositions.

Excluded Subject Matter

In Canadian law, scientific principles or abstract theorems are explicitly excluded from patentability. This would include mathematical formulae or laws of nature. Similarly, Canadian courts and the Canadian Patent Office have indicated that they also consider other types of subject matter to be unpatentable. Significant examples include higher life forms, a series of mental steps, schemes or plans of doing business, methods of medical treatment and methods relying on professional skill.

There may be many ways to view and describe a technology to fit within one of the established categories of patentable subject matter. Please contact us if you have specific questions relating to whether your technology may include patentable subject matter.

To be patentable, and after first fitting within one of the fields of patentable subject matter, a development must be new, non-obvious and useful.

New

To be considered new, the subject matter must not have been sold, published, or otherwise available to the public before that application is filed. This includes where the inventor discloses the invention to the public as well when someone else discloses the invention. A single prior publication can also render a patent not “new” if it discloses every essential element of claimed invention.

This is one of the reasons why it is imperative that a patent application is filed before the invention is disclosed to the public. Although the inventor may be able to file an application up to one year after the inventor disclosed the invention, this ability is limited to select countries, such as Canada and the US. In most other countries, no patent protection is available after the invention has been disclosed. This one year “grace period” is also limited only to disclosures by the inventor.

Non-obvious

The development must also be not obvious to a person of ordinary skill of the art. This is sometimes referred to as requiring an inventive step. The person of ordinary skill in the art is expected to have normal skill and knowledge in the field of the invention.

The prior art that is considered available is all patents, patent applications and publications available at the claim date of the invention in question. Essentially, if the invention in question would have been suggested to this person based on their knowledge and the available prior art to arrive at this invention, it is considered obvious and therefore unpatentable.

The determination of obviousness is a difficult legal test to apply in addition to being slightly different in most countries. If you have any doubt about whether your development is obvious, please contact us.

Useful

Utility requires the development to actually work. This is typically the easiest requirement to satisfy. This requirement is usually met where it can be shown that the device will perform the function it is intended to do.

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